IN THE UNITED STATES DISTRICT COURT

EASTERN DISTRCT OF VIRGINIA

ALEXANDRIA DIVISION

__________________________________________

)

CURTIS A. EVANS and WHIPGOLF, LLC , )

)

Plaintiffs, )

)

v. ) C.A. No. 1:15-cv-000683

)

PLUSONE SPORTS, LLC, )

a Massachusetts limited liability company, )

and ALEX VAN ALEN, )

)

Defendants. )

__________________________________________)

MEMORANDUM IN SUPPORT OF

MOTION FOR PRELIMINARY INJUNCTION

Plaintiffs, Curtis A. Evans (Evans) and WhipGolf, LLC (WhipGolf), submit this

Memorandum in Support of their Motion for Preliminary Injunction against Defendants, PlusOne

Sports, LLC, (PlusOne) and Alex Van Alen (Van Alen).

INTRODUCTION

Plaintiffs seek to enforce a November 2, 2014, license agreement between the parties (the

Agreement) and have moved to enjoin Defendants from the improper manufacture, use, or sale

of licensed products. Unless enjoined, Defendants breaches of the Agreement and the misuse of

Evanss and WhipGolfs licensed device will continue. Defendants agreed that a breach of the

Agreement would constitute irreparable harm and the irreparable harm is further demonstrated

by the loss of Plaintiffs first-mover advantage.

2

FACTUAL BACKGROUND

Throw Golf

This case concerns the emerging sport of throw golf. See Exh. A, Declaration of Curtis

A. Evans, at 3. Throw golf provides an alternative to traditional golf by combining many of

the most popular elements of golf and lacrosse into a new and entertaining sport. Id. at 3.

While the game is played on traditional golf courses, and many of the basics of golf still apply,

participants play each hole with a single stick instead of up to 13 golf clubs. Id. at 3. Players

use a lacrosse-like throwing motion to advance a golf ball as if they were playing traditional golf.

Id. at 3. Instead of using a driver off the tee, irons in the fairway, or a wedge around greens,

players develop different techniques to shape their shots using various throwing motions. Id. at

3.

Once a player reaches the green, the side of the stick is used to push the ball towards

the hole much like a traditional golf putt. Id. at 4. Throw golf is used as a means to introduce

new players to golf, without the lifelong process of swing mastery, and can be played alongside

traditional golfers. Id. at 4. Golf courses throughout the country have begun to embrace this

sport as a way to attract an entirely new generation of patrons to their businesses and to the

greater game of golf. Id. at 4.

The Parties

Evans invented an apparatus for throwing a golf ball a long distance. Id. at 5. On

February 28, 2012, Evans filed a provisional patent application with the United States Patent &

Trademark Office (USPTO), No. 61604176, for Projectile and throwing apparatus and game

for projectile throwing. Id. at 6. On February 27, 2013, Evans filed U.S. Patent Application

13/779,676, claiming priority to the provisional application. Id. at 7. The Evans Application

3

published on May 29, 2014 as U.S. 2014/0144417. Id. at 7. Evans is the sole member and

manager of WhipGolf. Id. at 1.

Van Alen is the sole member of PlusOne, which filed its own patent application for the

subject of Evanss application. Id. at 8. PlusOnes application was rejected by the USPTO in

light of Evanss application. Id. at 9. After discovering the Evans Application, PlusOnes

counsel contacted Evans and advised that PlusOne was preparing to sell a product that practiced

at least one invention disclosed in Evanss application. Id. at 10. PlusOne expressed interest in

licensing Evanss application and any resulting patents. Id. at 11.

The Agreement

Evans reluctantly agreed to discuss a license of his technology with PlusOne if the parties

could agree upon certain business terms. Id. at 11. While Evans had trepidation about

licensing to an unknown start-up company in the sporting goods industry, and desired guaranteed

royalty payments, discussions still progressed between the parties. Id. at 12. PlusOnes initial

license proposal, sent on August 14, 2014, requested an exclusive license, with a right to

sublicense, in exchange for payment of royalties. Id. at 13. Evans rejected this initial proposal,

but the parties continued negotiations over several months and PlusOne eventually agreed to

accept a non-exclusive license and guarantee royalty payments to Evans. Id. at 14.

On November 2, 2014, the parties executed the Agreement. Id. at 15. A copy is

attached as Sealed Exhibit 1. Id. at 16. Van Alen executed the Agreement as CEO of PlusOne

and personally guaranteed PlusOnes performance. Id. at 17.

Among the promises contained in the Agreement is a provision for the payment of

royalties based upon the gross sales of products practicing the licensed inventions. Id. at 19.

Royalty payments are required to be paid quarterly, and are to be received no later than 30 days

4

after the close of each quarter. Id. at 20. Delinquent payments remaining uncured for at least

10 business days from the date of notice of the delinquency allow Evans to terminate the license

and invoke an acceleration clause. Id. at 21. The acceleration clause permits Evans to declare

future annual minimum royalty payments immediately due and also permits him to terminate the

license for PlusOne to make, use or sell any licensed product. Id. at 22.

Most importantly, however, is the parties agreement that delinquent payment

constitutes irreparable harm. Id. at 23. The parties agreed that Delinquent payment,

uncured 10 business days from due date, presents irreparable harm to Licensor and parties agree

to remedy in equity allowing Licensor to enjoin any further manufacture, use, or sale. Id. at

23. That was not only a contractual agreement, but the recognition of that fact that the first party

to market with this novel technology would permanently enjoy a first-mover advantage that

would be impossible to replicate. Id. at 24.

For example, the parties discussed during negotiations that the first mover would garner

substantial goodwill among the golfing community, golf course owners associations and

facilities owners, equipment retailers and wholesalers, and investors. Id. at 25. The Agreement

was executed only after PlusOne agreed to include a guaranteed royalty and to being excluded

from the market if it failed to make the guaranteed payment. Id. at 26.

An early draft of the Agreement contained a choice-of-law provision calling for the

application of Virginia law. Id. at 27. However, the parties modified that term in the executed

version of the Agreement to call for the application of Delaware law. Id. at 28. This change

was intentional. Id. at 29. In fact, the change to Delaware law was suggested by PlusOnes

counsel to make the Agreement binding, even though the parties contemplated the execution of a

more comprehensive agreement at a later date. Id. at 29, 30.

5

License Agreement Negotiations

The Agreement (which is entitled Term Sheet) contains all the material terms necessary

to constitute a binding and enforceable contract. Id. at 33. It contains a royalty rate and a

formula for calculating the rate. Id. at 33. It contains payment terms, the right to audit records,

and an acceleration provision. Id. at 33. It contains a detailed license grant exclusion and a

covenant not to sue from PlusOne to Evans. Id. at 33. It has detailed due diligence, marking

and assignment provisions. Id. at 33. It contains a provision concerning confidentiality and

choice of law. Id. at 33.

The Agreement required the parties to work in good faith to execute a more

comprehensive and equally binding Agreement that would be entitled Non-Exclusive License

Agreement. Id. at 31. Evans sought to comply with this term by drafting a more

comprehensive agreement and forwarding it to PlusOne on November 4, 2014. Id. at 32.

PlusOne responded with a heavily redlined draft that changed material terms. Id. at 34. Evans

agreed to some of the suggested language, but rejected PlusOnes changes that were inconsistent

with the Agreement. Id. at 35. Despite Evanss good faith efforts on a number of occasions,

including through counsel, to execute a more comprehensive Non-Exclusive License Agreement

with PlusOne, PlusOne terminated negotiations in January, 2015, just before the industrys

biggest trade show. Id. at 36.

PlusOnes Breach

On January 1, 2015, Evans emailed PlusOne to remind it that the first guaranteed annual

minimum royalty payment of $10,000 was due on January 5, 2015. Id. at 7. Van Alen sent an

e-mailed response to Evans informing him that PlusOne would not make any payment. Id. at

38. On January 6, 2015, Evans notified PlusOne that it was delinquent in its payment of the

6

guaranteed annual minimum royalty payment set forth in the Agreement. Id. at 39. PlusOne

failed to cure this deficiency within the allotted ten days after notice. Id. at 39. On March 6,

2015, Evans, through counsel, sent formal notice of default to PlusOne, invoking the

Agreements acceleration clause, demanding immediate payment, and suspending PlusOnes

right to make, use, or sell any Licensed Product. Id. at 40.

Despite the demand for payment, PlusOne has failed to make any payments due under the

Agreement. Id. at 41. PlusOne has also continued to make, use, and sell Licensed Product in

defiance of Evanss suspension of PlusOnes right to make, use, and sell the Licensed Product.

Id. at 42.

Van Alen has indicated that PlusOne possesses approximately 5,000 units of Licensed

Product in its inventory, despite the suspension of its license to make, use, and sell such

inventory, and that it planned to make and/or sell 24,000 units for 2015 and 120,000 units for

2016. Id. at 43. Because Van Alen and PlusOne continue to market and sell such inventory,

Evans and WhipGolf are being irreparably injured by PlusOnes unlawful market position as a

first-mover in this industry every day. Id. at 44.

Trademark Misuse

PlusOne is presently selling product and conducting advertising that contains the circle-R

() symbol for a federal trademark registration when no such federal trademark registration

exists. Id. at 45. There is a compelling public interest in preventing PlusOne from falsely

marking its product and marketing material with the circle-R symbol. PlusOne is presently mis-

using the circle-R symbol adjacent the marks FLINGGOLF and FLINGSTICK, and it has

been doing so improperly since December, 2014 when it abandoned federal registration of those

marks for use with certain goods. Id. at 46.

7

If PlusOne continues to sell inventory containing a circle-R symbol adjacent the mark

FLINGSTICK, the public would be misled into believing that PlusOne has secured a federal

trademark registration when exactly the opposite is true PlusOne abandoned the mark in

December, 2014. Id. at 47-48.

PROCEDURAL HISTORY

Plaintiffs filed their Complaint on May 29, 2015. The Complaint was served on June 20,

2015. On June 5, 2015, Plaintiffs sent Defendants a letter advising them that they had until June

26, 2015 to resolve this matter or Plaintiffs would move for preliminary injunctive relief.

Defendants did not respond to that demand and instead filed a motion to dismiss. Plaintiffs have

timed the filing of this motion so that it will be heard on the same day and at the same time as the

motion to dismiss.

ARGUMENT

This case concerns a signed Agreement between two sophisticated parties. Defendants

breached that Agreement. An uncured payment default is a material breach and, pursuant to the

express terms of the Agreement, constitutes irreparable harm. Even without the contractual

agreement concerning the existence of irreparable harm, the existence of such harm cannot

seriously be contested. The first to market in this fledgling market will forever enjoy a first-

mover advantage that will be impossible to duplicate. The monetary value of that advantage will

be equally impossible to calculate. Because Plaintiffs will be able to show that they are

substantially likely to succeed on the merits, that they will be irreparably harmed if Defendants

are not enjoined, and that all of the other factors weigh in favor of an injunction, this Motion

should be granted.

8

I. STANDARD FOR A PRELIMINARY INJUNCTION

A preliminary injunction is an extraordinary remedy, and the issuance or denial of such a

remedy is a decision within the discretion of the district court. The Real Truth About Obama,

Inc. v. Federal Election Comn, 575 F.3d 342, 346 (4th Cir. 2009). To succeed, a plaintiff

must establish [1] that he is likely to succeed on the merits, [2] that he is likely to suffer

irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his

favor, and [4] that an injunction is in the public interest. Winter v. Natural Resources Defense

Counsel, Inc., 555 U.S. 7, 20 (2008); The Real Truth About Obama, 575 F.3d at 346; ForceX,

Inc. v. Technology Fusion, LLC, 2011 WL 2560110, at *4 (E.D. Va. June 27, 2011).

II. EVANS AND WHIPGOLF ARE LIKELY TO SUCCEED ON THE MERITS

Defendants failure to make their first guaranteed annual minimum royalty payment of

$10,000 on January 5, 2015, and their subsequent failure to cure their breach within 10 business

days of the January 6, 2015 delinquency notice, is an unquestionable default. The Agreements

acceleration clause permits Evans to accelerate guaranteed royalties and to terminate the license

to make, use, or sell the licensed product upon default. Thus, in analyzing Plaintiffs likelihood

of success on the merits, the only issue is whether the Agreement is a valid and enforceable

contract. The Court should find that Plaintiffs are likely to succeed on the merits because the

Agreement is valid and enforceable and it has been undeniably breached by PlusOne.

A. Choice of Law

This case presents the question of what law to apply to a breach of contract claim when

the parties dispute whether an enforceable contract even exists. The Agreement, which was

signed by sophisticated parties, each represented by counsel, contains a choice-of-law provision

stating that Delaware law should apply. Virginia courts, however, have held that the automatic

9

application of such a provision impermissibly assumes that an enforceable agreement exists,

which is the question before the Court. Thomaz v. Its My Party, Inc., No. 1:13-cv-00009-JCC-

TRJ, 2013 WL 1450803, at *4 (E.D. Va. Apr. 9, 2013) (Cacheris, J.), affd, 548 F. Appx 893

(4th Cir. 2013).

1. The Validity, Interpretation or Construction of a Disputed Contract

Is Governed by the Place of Contracting

In Virginia, . . . the validity, interpretation, or construction of a contract is governed by

the substantive law of the lex loci contractusthe place of contracting. O'Ryan v. Dehle Mfg.

Co., 99 F. Supp. 2d 714, 718 (E.D. Va. 2000); Best Medical Intl v. Tata Elxsi Ltd., No. 1:10-cv-

01273, 2011 WL 5843627 at *4 (E.D. Va. 2011) (Davis, J.). [T]he place of contracting is

determined by the place where the last act necessary for a binding contract took place.

Thomaz, 2013 WL 1450803, at *5 (quoting Western Branch Holding Co. v. Trans Marketing

Houston, 722 F. Supp. 1339, 1341 (E.D. Va. 1989)).

The parties negotiated the Agreement over a series of months. See, Exh. A. at 14. On

November 2, 2014, Evans (who was in Virginia) placed his electronic signature upon the Term

Sheet and sent the executed version to Van Alen (who was in Massachusetts) for his signature.

Id. at 18. Van Alen then accepted by countersigning on behalf of PlusOne later on November

2, 2014 in Massachusetts. Id. at 18. Thus, the last act necessary to create a binding contract

Van Alens signature took place in Massachusetts. As demonstrated below, the Agreement is

plainly valid and enforceable under Massachusetts law.

10

2. If the Contract Is to be Performed in a Place Other than the Place of

Contracting, Then the Law of the Place of Performance Controls

Virginia recognizes an exception to lex loci contractus. In situations where the contract

is to be performed in a place other than that dictated by the application of lex loci contractus,

then the law of the place of performance governs. Thomaz, 2013 WL 1450803 at *5; see also

Equitable Trust Co. v. Bratwursthaus Management Corp., 514 F.2d 565, 567 (4th Cir. 1975). A

contract breach is a performance issue and, thus, is regulated by the law of the place of

performance. Thomaz, 2013 WL 1450803 at *5.

Courts in this jurisdiction have considered the place of performance to be where the

majority of the services are to be performed. Best Medical, 2011 WL 5843627 at *4; see also J.

David Conti, Inc. v. Stokes Equip. Co., No. 3:94cv15, 1994 U.S. Dist. LEXIS 16926 at *20 (E.D.

Va. Sept. 16, 1994) (Virginia was place of performance where the majority of the manufacturing

and testing of the product was to take place in Virginia). In Best Medical, an Indian software

contractor performed virtually all of its services in India and then uploaded the completed code

to Pennsylvania for its customer to assess. Based on those facts, this Court concluded that India

was the place of performance.

This case is like Best Medical. The only obligation on Evans, as the licensor, is to grant

the license, refrain from granting other licenses, and then accept royalty payments. By contrast,

PlusOne is obligated, per the Due Diligence provision on page 2 of the Agreement, to diligently

proceed with the development, manufacture, and sale of the Licensed Products, and PlusOne will

earnestly and diligently market the same after execution of this Agreement and in quantities

sufficient to meet the market demands therefore. Thus, the overwhelming majority of services

11

to be performed under the Agreement are to be performed by PlusOne and those services are to

be performed either in Massachusetts or in other states.

There does not appear to be a Virginia case concerning the place of performance of a

license agreement for choice-of-law purposes. In fact, there is a paucity of authority on that

issue across the United States. The Northern District of Illinois has, however, examined this

precise issue and determined that the place of performance for a licensing agreement is the place

where licensed products were manufactured and used in commerce. Fischer Industries, Inc. v.

Medivance Instruments, Ltd., No. 89-c-9082, 1992 WL 686866, at *10, n.8 (N.D. Ill. Aug. 31,

1992).

In Fischer, the English licensor sought to apply English law to a dispute concerning a

licensing agreement. The Illinois-based licensee argued that the subject licensed products were

manufactured in Illinois. The court held that the place of performance of the license agreement

was Illinois because the licensed products were manufactured there. Id. This rule is also

consistent with Virginia law concerning sales contracts. In Virginia, [t]he place of performance

of a sales contract is usually considered to be the place where goods are delivered. Madaus v.

November Hill Farm, Inc., 630 F. Supp. 1246, 1248 (W.D. Va. 1986). Thus, the place of

performance for the Agreement should be deemed to be Massachusetts and Massachusetts law

should apply to contract validity, construction and enforceability issues.

3. If the Place of Performance Is in Multiple Jurisdictions, Then the Law

of the State in Which the Contract Was Made Applies

In Virginia, there is an exception to the exception in cases where the place of

performance cannot definitively be determined or it is determined to be in more than one state.

East West, LLC v. Rahman, 873 F. Supp. 2d 721, 728 (E.D. Va. 2012) (Cacheris, J.).

12

Importantly, an exception exists when the contract is to be performed more or less equally

among two or more states, in which case the law of the state in which the contract was made

should apply. Id. (citing Roberts v. Aetna Casualty & Sur. Co., 687 F. Supp. 239, 241 (W.D.

Va. 1988); Black v. Powers, 48 Va. App. 113, 13233, 628 S.E.2d 546 (Va. Ct. App. 2006)).

In the context of a license agreement, there is no credible argument that such an

agreement is performed entirely in the home state of the licensor. At most, a license agreement

is an agreement in which some part of the performance occurs in the licensors jurisdiction and

the overwhelming majority of the rest occurs either where the licensee, who is manufacturing

and selling the licensed products, is operating or in multiple jurisdictions. Under the exception

to the exception rule, Virginia courts revert to the place of contracting, which here dictates the

application of Massachusetts law. See, e.g., The Chesapeake Supply and Equipment Co. v. J.I.

Case Co., 700 F. Supp. 1415, 1418 FN 10 (E.D. Va. Nov. 23, 1988) (Ellis, J.) (finding agreement

performed in Maryland, as well as in Virginia and Delaware); accord John Deere Const.

Equipment Co. v. Wright Equipment Co., Inc., 118 F. Supp.2d 689, 693 (W.D. Va. Oct. 3, 2000)

(agreement performed in four other states besides Virginia).

4. Virginia Respects Choice-of-Law Provisions in Contracts

While, as a general rule, the validity of a contract in Virginia is determined under the law

where the contract was made, Virginia law looks favorably upon choice of law clauses in a

contract, giving them full effect except in unusual circumstances. Colgan Air, Inc. v. Raytheon

Aircraft Co., 507 F.3d 270, 275 (4th Cir. 2007); see also M/S Bremen v. Zapata OffShore Co.,

407 U.S. 1, 10 (1972) (forum selection clauses are presumed valid unless unreasonable); accord

Tate v. Hain, 181 Va. 402, 410, 25 S.E.2d 321 (1943). Courts in this jurisdiction honor the

choice-of-law provision in a contract at issue unless (a) it is unfair or unreasonable, or affected

13

by fraud or unequal bargaining power, or (b) there is some indication that the parties did not

clearly intend for the designated law to govern the terms of the contract. Edwards Moving &

Rigging, Inc. v. W.O. Grubb Steel Erection, Inc., No. 3:12-cv-146-HEH, 2012 WL 1415632, at

*3 (E.D. Va. Apr. 23, 2012).1

Plaintiffs appreciate the concern that enforcing a choice-of-law provision in a contract

that is argued to be invalid or unenforceable somewhat puts the cart before the horse. Here,

however, there is a signed document, executed by sophisticated parties represented by counsel,

containing many detailed provisions including choice of law. By affixing their signatures to the

document, they agreed to something.

The Agreement was the result of a contract between parties with equal bargaining

power. For these reasons, this Court could also determine that Delaware law controls the issue

of whether the Agreement is enforceable. As will be shown below, an analysis of the Agreement

under Delaware law will conclude that the Agreement is binding and enforceable.

To be clear, Plaintiffs believe that the validity and enforceability of the Agreement should

be examined under Massachusetts law. However, regardless of whether Massachusetts,

Delaware or even Virginia law is applied, the result will be the same. The Agreement is

enforceable.

B. The Agreement Is Enforceable Under Massachusetts Law

Massachusetts law provides that if the parties have agreed upon all material terms, it

may be inferred that the purpose of a final document which the parties agree to execute [in the

future] is to serve as a polished memorandum of an already binding contract. Goren v. Royal

1 These two lines of cases cannot be easily reconciled. In Edwards Moving, for example, Judge Hudson

expressed no reservations about enforcing a choice of law provision in a contract that was argued to be

unenforceable and contrary to Virginia public policy.

14

Investments Inc., 25 Mass. App. Ct. 137, 140, 516 N.E.2d 173, 175 (Mass. App. 1987); accord

America's Growth Capital, LLC v. PFIP, LLC, No. 12-cv-12088, 2014 WL 7330757, at *16 (D.

Mass. Dec. 19, 2014) (When a preliminary agreement incorporates all of the material terms of a

contract, and the execution of the final instrument is a mere formality, a binding contract is

formed). While [t]here is commercial utility to allowing persons to hug before they marry,

Massachusetts law requires parties to explicitly state that they do not intend to be bound by

an otherwise valid preliminary agreement. Goren, 515 N.E.2d at 176-77 (A proviso of that

sort should speak plainly, e.g., The purpose of this document is to memorialize certain business

points. The parties mutually acknowledge that their agreement is qualified and that they,

therefore, contemplate the drafting and execution of a more detailed agreement. They intend to

be bound only by the execution of such an agreement and not by this preliminary document.).

The District of Massachusetts applied this reasoning to validate a disputed agreement in

Video Central, Inc. v. Data Translation, Inc., 925 F. Supp. 867, 870 (D. Mass. 1996). As the

parties had both signed a letter of intent that included all essential terms, including the rights

granted by the instrument, the duration of the agreement, the price of the units to be distributed,

the geographic limits of the distributorship, the minimum volume of sales required to maintain

exclusive distributorship rights, the court determined that the letter of intent was sufficiently

detailed such that the transaction [could], if necessary and finally determined to be appropriate,

be consummated solely on the basis of the [letter]. Id. at 870 (quoting RandWhitney

Packaging Corp. v. Robertson Group, 651 F. Supp. 520, 534 (D. Mass. 1986)).

The court distinguished the letter of intent from a case where there was a mere agreement

to purchase goods in the future and agree upon terms in detail at that time. Id. at 870. In finding

the letter of intent potentially valid, the court also accorded significant weight to the parties

15

failure to provide a disclaimer that they did not yet intend to be bound as in Goren. Id. at 872

(quoting Goren, 516 N.E.2d at 176-77).

Like the disputed contracts in Goren and Video Central, the Agreement details all

essential and material terms. It expressly describes the technology involved and the geographic

scope of the license both for manufacture and sales. The exclusive and non-exclusive nature of

the license rights are defined therein, as are the rights to grant sublicenses, the nature of licensed

products, and the parties usage of certain marks. Perhaps most importantly, the Agreement

defines in great detail the calculation of royalties, the due dates of royalty payments, and the

consequences for the parties in the event of default.

As set forth in Video Central, the transaction [could], if necessary and finally

determined to be appropriate, be consummated solely on the basis of the [letter]. Video Central,

925 F. Supp. at 870. Moreover, while the parties painstakingly negotiated material terms over a

period of months, they entirely and purposely failed to include the type of plain disclaimer

stating that the agreement did not intend to create legally binding obligations as required by

Massachusetts law. Under Massachusetts law, Plaintiffs are likely to succeed in obtaining a

determination that the Agreement is a valid contract, and are thus likely to succeed on the merits.

C. The Agreement Is Enforceable Under Delaware Law

If the Court respects the parties choice-of-law agreement, the Agreement is enforceable

under Delaware law. In Delaware, an enforceable contract exists when (1) the parties intended

that the contract would bind them, (2) the terms of the contract are sufficiently definite, and (3)

the parties exchange legal consideration. Osborn ex rel. Osborn v. Kemp, 991 A.2d 1153, 1158

(Del. 2010). The Agreement satisfies each of these requirements.

16

[I]t is hornbook law that one who accepts a written contract, either by signing or by

other means, will normally be bound by its terms . . . . In re Abingdon Realty Corp., 18 B.R.

571, 573 (E.D. Va. 1982). Whether the parties intended to be bound may be inferred, in large

part, by their actions. For example, in Osborn, the court explained that the face of [a] contract

manifests the parties intent to bind one another contractually. 991 A.2d at 1158-59. By virtue

of the parties signature upon the contract, the Osborn court determined that they plainly

intended to be bound by it. Id. at 1158-59. Similarly, here, the Agreement was indisputably

signed by the parties. Thus, like in Osborn, this Court should determine that the parties intended

to be bound. Similarly, as in Osborn, there can be no serious argument that consideration has

not passed between the parties. Id. at 1158-59.

Delaware adheres to the objective theory of contracts, i.e. a contracts construction

should be that which would be understood by an objective, reasonable third party. Id. at

1159. Delaware law requires that a court read a contract as a whole and [ ] give each provision

and term effect, so as not to render any part of the contract mere surplusage. Id. at 1159. [A]

contract must contain all material terms in order to be enforceable. Id. at 1159.

Here, the Agreement creates an unambiguous contract for PlusOne to license the right to

use Evanss intellectual property in exchange for payment of carefully defined royalties. See id.

at 1160 (This contracts only reasonable interpretation creates an installment contract with an

option to purchase at the end of the term.). The parties agreed to the scope of the license to use

Evanss intellectual property, the exclusivity, the amount of royalties, and the damages available

in the event of a partys breach. The first page refers to a license agreement and indicates that

the parties characterized it as Version: 3.6-Final. The terms of this contract are succinctly

stated, unambiguous, and definite.

17

Even if the Court finds that the Agreement is an agreement to agree upon a future terms,

such an agreement is still enforceable under Delaware law so long as it contains the essential

terms to form a contract. Parties may make agreements to make a contract and such agreements

will be enforced if they specify all of the material and essential terms including those to be

incorporated in the future contract. Vale v. Atl. Coast & Inland Corp., 99 A.2d 396, 399 (Del.

Ch. 1953) (still the leading and most cited case on this issue). Thus, Delaware law is the same as

Massachusetts law on this issue.

D. The Agreement Is Enforceable Under Virginia Law

While Massachusetts and Delaware law clearly favor a finding that the parties

Agreement is valid and enforceable, the application of Virginia law likely would result in the

same finding. This is because the Agreement is not merely a commitment to reach a future

contractual objective (agreement to agree), but is instead a fully binding preliminary agreement.

In Thomaz, this Court examined the validity of a contract in which an election was made

for New York law to apply. Thomaz, 2013 WL 1450803, at *4. When comparing the law of

New York and Virginia regarding contract validity, the Court explained that it was unable to

discern any meaningful difference between New York and Virginia law on this issue. Id. at *5.

While the Court went on to apply Virginia law to the dispute at issue, it made clear that New

York and Virginia law of contract validity do not differ appreciably. Id. at *5.

This comparison provides helpful guidance in light of the Fourth Circuits adoption of

Judge Levals widely-cited decision, Teachers Insurance and Annuity Assoc. of America v.

Tribune Co., 670 F. Supp. 491 (S.D.N.Y. 1987), to recognize the importance of enforcing and

preserving agreements that were intended as binding, despite a need for further documentation or

further negotiation in the future. Burbach Broad. Co. of Delaware v. Elkins Radio Corp., 278

18

F.3d 401, 407 (4th Cir. 2002). In Burbach, the Fourth Circuit applied Judge Levals distinction

between Type I and Type II preliminary agreements under New York law to a contract

validity dispute arising under West Virginia law. Id. at 407. Given the Thomaz courts

observations about the similarities between New York and Virginia law on this issue, this

analysis applies with equal force to Virginia law. Thomaz, 2013 WL 1450803, at *5.

A Type I agreement is often referred to as a fully binding preliminary agreement.

Burbach, 278 F.3d at 407. This type of preliminary agreement occurs when parties have

reached a complete agreement (including the agreement to be bound) on all issues perceived to

require negotiation. Id. at 407 (citing Teachers Insurance, 670 F. Supp. at 498). Such an

agreement is preliminary only in form-only in the sense that the parties desire a more elaborate

formalization of the agreement. Id. at 407 (citing Teachers Insurance, 670 F. Supp. at 498).

The second stage is not necessary; it is merely considered desirable. Id. at 407 (quoting

Teachers Insurance, 670 F. Supp. at 498).

By contrast, a Type II agreement is often referred to as a binding preliminary

commitment. Id. at 407 (quoting Teachers Insurance, 670 F. Supp. at 498). While Type I

agreements bind parties to their ultimate contractual objective in recognition that a contract was

reached, despite the anticipation of further formalities, Type II agreements do not commit the

parties to their ultimate contractual objective. Id. at 407 (citing Teachers Insurance, 670 F. Supp.

at 498). Rather, they commit the parties to negotiate the open issues in good faith in an attempt

to reach the contractual objective within the agreed framework. Id. at 407 (citing Teachers

Insurance, 670 F. Supp. at 498). The parties assume a duty to negotiate in good faith, and are

barred from renouncing the deal, abandoning the negotiations, or insisting on conditions that do

19

not conform to the preliminary agreement. Id. at 407 (citing Teachers Insurance, 670 F. Supp. at

498).

Regardless of an agreements title, Type I and Type II preliminary agreements are both

binding and enforceable. Id. at 407. The parties Agreement is clearly a Type I agreement. As

the Fourth Circuit explained, a Type I agreement is characterized by certain circumstances:

1) whether there has been an express reservation of the right not to

be bound in the absence of a writing, 2) whether there has been

partial performance of the contract, 3) whether all of the terms of

the alleged contract have been agreed upon, and 4) whether the

agreement at issue is the type of contract that is usually committed

to writing.

Id. at 408 (quoting Adjustrite Systems, Inc. v. GAB Business Services, Inc., 145 F.3d 543, 549 (2d

Cir. 1998); see also Restatement (Second) of Contracts 27 cmt. c (1981).

The parties made no reservation of the right to not be bound in their Agreement. Further,

partial performance has occurred because Van Alen and PlusOne began producing units of

licensed product and selling such units to the public pursuant to their due diligence obligation.

The Agreement states that it is Version: 3.6-Final and demonstrates its finality by providing

detailed explanations of all agreed-upon terms. These circumstances demonstrate that the

parties Agreement is, in fact, a Type I agreement and, therefore, is both binding and enforceable

under Virginia law.

III. IF PLUSONE IS NOT ENJOINED, PLAINTIFFS WILL SUFFER

IRREPARABLE INJURY

Evans invented the devices described in his patent application, which was first filed on

February 28, 2012. PlusOnes applications were rejected in light of Evanss application. That

forced PlusOne to pursue a license from Evans.

20

PlusOne and Van Alen agreed that their product infringes a Valid Claim (the definition of

which includes claims in pending patent applications that have not yet issued), and they promised

a guaranteed royalty because of that acknowledgment of not being first to invent. The parties also

agreed that Evans could notify the public that he had granted PlusOne a non-exclusive license

(and necessarily that PlusOne would acknowledge it had taken a non-exclusive license), providing

credibility and goodwill to Evans in the marketplace as the first to invent the product for throw

golf. See, Exh A at 49.

Plaintiffs have suffered and will continue to suffer irreparable harm if Defendants are not

enjoined. Id. at 50. Plaintiffs delayed manufacturing their own product and did not participate

in the PGA Merchandising Show in late January, 2015 in reliance upon the promises and

representations contained in the Agreement. Id. at 50. In delaying formal entry into the market,

and failing to participate in the leading industry trade show, Plaintiffs missed their chance to

garner substantial recognition and goodwill for introducing a new and innovative product into the

golf market. Id. at 51. PlusOne unilaterally terminated discussions with Plaintiffs on the eve of

this show, which left insufficient time for Plaintiffs to obtain a booth and exhibit their product at

the most important show of the year. Id. at 52.

Defendants expressly acknowledged that any uncured delinquent payment will cause

Evans to suffer irreparable harm. (Delinquent payment, uncured 10 business days from due date,

presents irreparable harm to Licensor and parties agree to remedy in equity allowing Licensor to

enjoin any further manufacture, use, or sale.). Such an acknowledgement is a highly important,

though not conclusive, factor in establishing whether irreparable harm exists. Dominion Video

Satellite, Inc. v. Echostar Sat. Corp., 356 F.3d 1256, 1266 (10th Cir. 2004) (collecting and

summarizing cases).

21

Both the Fourth Circuit and this Court have consistently held that [w]hen the failure to

grant preliminary relief creates the possibility of permanent loss of customers to a competitor or

the loss of goodwill, [such as here,] the irreparable injury prong is satisfied. Fred Hutchinson

Cancer Research Ctr. v. BioPet Vet Lab, Inc., No. 2:10-cv-616, 2011 WL 1119565, at *5 (E.D.

Va. Mar. 1, 2011); see also Merrill Lynch, Pierce, Fenner & Smith, Inc. v. Bradley, 756 F.2d

1048, 1055 (4th Cir. 1985) (holding that possibility of permanent loss of customers to competitor

or possible loss of goodwill satisfies irreparable harm prong of an injunction analysis).

Given Defendants continued marketing and sales of inventory practicing licensed

inventions, despite the suspension of the license, the likelihood of permanent loss of customers to

a competitor and the loss of goodwill exists and the magnitude of the loss will be impossible to

quantify.

More importantly, Defendants improperly positioned themselves as the first-mover in this

emerging industry by unlawfully commercializing Plaintiffs intellectual property. That

advantage, once lost, can never be recovered. Thus, Evans and WhipGolf have established that

they will suffer irreparable harm. Rimlinger v. Shenyang 245 Factory, No. 2:13-CV-2051, 2014

WL 2527147, at *6 (D. Nev. June 4, 2014) (loss of market share or first mover advantage may

lead to relief especially where the movant demonstrates that it operates in a market with only

one or several competitors).

Continued firsts for PlusOne would usurp Evanss goodwill as the creator of the

technology, as the product is first introduced to new golf courses by PlusOne rather than Evans,

to new players, to owners of groups of golf courses who may buy large numbers of sticks at

once, to tournament organizers, to tradeshows, to players leagues, to golf driving ranges, to

golf-related magazines and websites, to golf-related television and radio programming, to golf

22

professionals, to celebrities, to charitable organizations, and to disabled athletes. PlusOne should

not be allowed an undeserved list of firsts, which can never be replicated or quantified, when it

agreed to cease manufacturing and sales if it missed guaranteed royalty payments.

Moreover, potential new market entrants should have seen a market of two competitors,

with Evans having licensed PlusOne. The existence of a license alone provides market goodwill

and credibility for Evans. Without it, Evans is harmed irreparably, with the market perceiving a

vastly different landscape with PlusOne as the first-mover and frontrunner, rather than Evans.

This disparity in goodwill cannot be monetarily calculated in this young and rapidly growing

market. New market entrants, having seen PlusOne take a license, would be more inclined to

investigate the necessity of taking a license from Evans, too, before entering the market.

Continued PlusOne sales outside the terms of the Agreement, in a market of two participants

PlusOne and WhipGolf irreparably harms Evans.

IV. THE BALANCE OF THE EQUITIES TIPS DECIDEDLY IN FAVOR OF EVANS

AND WHIPGOLF

In determining whether to grant a preliminary injunction, a court must balance the

competing claims of injury and must consider the effect on each party of the granting or

withholding of the requested relief. Winter, 555 U.S. at 376. The relief sought simply would

enjoin wrongful actions and return the parties to the status quo before Defendants breached the

Agreement. The requested injunction merely obligates Defendants to comply with the

Agreement by abiding by the termination of their permission to make, use, or sell the licensed

products. Atlantic Diving Supply, Inc. v. Moses, No. 2:14-cv-380, 2014 WL 3783343, at *12

(E.D. Va. July 31, 2014) (holding that the balance of the equities weighed in favor of plaintiff

23

where the requested injunction merely require[d] [d]efendant to do what he [was] otherwise

obligated to do pursuant to the [a]greement).

By contrast, Evans and WhipGolf will continue to suffer irreparable harm if an injunction

is not issued and Defendants are allowed to continue to manufacture, use, and sell the licensed

products. As previously described, Van Alen has indicated that PlusOne possesses

approximately 5,000 units of licensed products in its inventory despite the suspension of its

license to make, use, and sell such inventory, and that PlusOne intends to manufacture and/or sell

24,000 units for 2015. Van Alen and PlusOne have continued to market and sell such inventory

despite the termination of their permission to do so. Because the throw golf industry is in the

early stages of its formation, Evans and WhipGolf are being further irreparably injured by

PlusOnes unlawful market position as the first mover in this industry every day that they

unlawfully use Evanss and WhipGolfs intellectual property without permission:

The loss or gain of a customer may have harms or benefits beyond

just the sale of the patented product. Customers often choose to do

all of their business with one supplier, therefore, the ability to

attract customers with exclusive access to an innovative product is

often relied on to increase the sales of other products and services

as well.

ePlus, Inc. v. Lawson Software, Inc., No. 3:09-cv-620, 2011 WL 2119410, at *11 (E.D. Va. May

23, 2011), modified, 946 F. Supp. 2d 459 (E.D. Va. 2013) (quoting Bendix Commercial Vehicle

Sys., LLC v. Haldex Brake Prods., No. 1:09-cv-176, 2011 WL 14372, at *6 (N.D. Ohio Jan. 3,

2011)).

V. THERE ARE COMPELLING PUBLIC POLICY REASONS TO ENJOIN THE

CONTINUED BREACH OF THE AGREEMENT BY DEFENDANTS.

A court should pay particular regard for the public consequences in employing the

extraordinary remedy of injunction. Winter at 376-77. As explained by Judge Payne while

24

granting an injunction to prevent impermissible patent infringement, the public interest served by

protecting intellectual property interests is substantial:

The public has a strong interest in maintaining the integrity of the patent system. MercExchange, 500 F.Supp.2d at 586 (quoting Odetics, 14 F. Supp.2d at 795). The Federal Circuit has long acknowledged the importance of the patent system in encouraging

innovation. SanofiSynthelabo v. Apotex, Inc., 470 F.3d 1368, 1383 (Fed. Cir. 2006). Indeed, the encouragement of investment-based risk is the fundamental purpose of the patent grant, and is

based directly on the right to exclude. Id. (quoting Patlex Corp. v. Mossinghoff, 758 F.2d 594, 599 (Fed. Cir. 1985)). Thus, the

Court gives considerable weight to the strong public interest

favoring entry of injunctive relief to protect ePlus's patent rights.

ePlus, Inc., 2011 WL 2119410, at *11.2

Accordingly, the public interest is served by the issuance of an injunction in this case.

CONCLUSION

For the foregoing reasons, Evans and WhipGolf request that the Court grant their Motion

for a Preliminary Injunction against Defendants and enter an Order:

a. Enjoining Defendants from making, using, or selling any product licensed

by the parties Term Sheet; and

b. Awarding such ancillary and further relief as the Court deems appropriate

on the facts and circumstances appropriate for this case.

2 In addition, PlusOnes selling and/or marketing goods with a circle-R designation of a federal trademark

registration when none exists provides a public policy reason to enjoin the continued breach. This Court has a clear

role to play in protecting the public from PlusOnes misuse of the federal trademark registration symbol. See, e.g., Diamonds Direct USA, Inc. v. BFJ Holdings, Inc., 895 F. Supp. 2d 752, 762 (E.D. Va. 2012) (The twin aims of trademark law are to protect the public from deceit and to protect investment from its misappropriation by pirates and cheats.)

25

Date: July 2, 2015 Respectfully submitted,

CURTIS A. EVANS AND

WHIPGOLF, LLC

By Counsel

LeCLAIRRYAN, P.C.

___________/s/___________________

Laurin H. Mills (VSB No. 79848)

Andrew J. Narod (VSB No. 79691)

2318 Mill Road, Suite 1100

Alexandria, VA 22314

Tel: (703) 647-5903

Fax: (703) 647-5953

Laurin.mills@leclairryan.com

Andrew.narod@leclairryan.com

BAYARD, P.A.

____________/s/___________________

Stephen B. Brauerman (No. 4952)

Vanessa R. Tiradentes (No. 5398)

Sara E. Bussiere (No. 5725)

222 Delaware Avenue, Suite 900

P.O. Box 25130

Wilmington, DE 19899-5130

(302) 655-5000

Counsel for Curtis A. Evans

CERTIFICATE OF SERVICE

I hereby certify that on July 2, 2015, I electronically filed the foregoing document with

the Clerk of Court using the CM/ECF system, which will send notice of such filing to counsel of

record who are registered with CM/ECF.

/s/ Andrew J. Narod